IPBiz

Friday, October 31, 2008

Because the applicable test to determine whether a claim is drawn to a patent- eligible process under § 101 is the machine-or-transformation test set forth by the Supreme Court and clarified herein, and Applicants' claim here plainly fails that test, the decision of the Board is AFFIRMED.

****In Amazin' Raisins, the CAFC said -->

ARI next argues that importing a numerical range into the claim would be improper because the claim does not expressly contain any such limitation. Although it is generally true that we will not limit a claim written in general, descriptive words by a numerical range appearing only in the written description, see Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998), “when a patentee uses a claim term throughout the entire patent specification, in a manner consistent with only a single meaning, he has defined that term ‘by implication.’” Bell Atl. Network Servs., Inc. v. Covad Commc’ns Group, Inc., 262 F.3d 1258, 1271 (Fed. Cir. 2001). Again, the passage at issue announces the scope of the detailed description of the invention and precedes all other discussion of any embodiments or examples.

In 1905, an obscure patent clerk in Bern, Switzerland published several papers that profoundly changed physics. This year we are celebrating the 100th anniversary of Einstein's miraculous year. In this non-technical talk I will discuss two of Einstein's revolutionary ideas--special relativity and how it changed our concept of space and time, and the photoelectric effect and how it changed our understanding of the nature of light.

Saturday, October 25, 2008

Biden so disliked West's line of questioning that the Obama campaign canceled a WFTV interview with Jill Biden, the candidate's wife.

"This cancellation is non-negotiable, and further opportunities for your station to interview with this campaign are unlikely, at best for the duration of the remaining days until the election," wrote Laura K. McGinnis, Central Florida communications director for the Obama campaign.

McGinnis said the Biden cancellation was "a result of her husband's experience yesterday during the satellite interview with Barbara West."

The provisional application as of its filing date also creates §§ 102 (e) and (g) prior art for the invention as against later filed U.S. applications.

This law review article PRECEDED Yamaguchi, so, hopefully, no one was surprised by the legal points made in Yamaguchi.

102(e) states:

A person shall be entitled to a patent unless

(...)

(e) the invention was described in - (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language;

In prosecution, the Examiner cited the Narayanan reference against a Texas Instruments patent application filed by Yamaguchi. The rejection identified Narayanan as prior art under 35 U.S.C. § 102(e). The issue on appeal to the BPAI was whether the Narayanan reference can be considered 102(e) prior art as of the filing date of its provisional application.

One notes that Narayan was an ISSUED patent, US 6,596,618, which claimed priority to provisional 60/254,437. The initial argument actually made by appellants was that the examiner had NOT FURNISHED a copy of the Narayan provisional and thus there was no evidence of support in the provisional. The examiner stated the provisional could be obtained from PAIR. THEN, the appellants argued the provisional did not track the issued patent.

The BPAI found that the examiner's use of the provisional filing date comported with the plain meaning of the statute. [it is not clear that the appellants argued against this point.]

Michael Kirk, who retired as the executive director of the AIPLA at the end of August, has claimed that high-tech companies have contributed to the creation of a significantly more hostile attitude to patent rights in the US. Speaking to IAM in an exclusive interview to mark his induction into the IP Hall of Fame, Kirk stated that the press and PR campaigns employed by companies - including Microsoft, Hewlett Packard, Cisco and Apple - that are members of the Coalition for Patent Fairness had helped create a situation in which patents are under attack in the country in a way that has not been seen before.

"I do not think that wanting to do something about issues such as damages and permanent injunctions is the problem," Kirk said. "It’s the way they have sought to make their point. When you say that the patent system is broken and needs fixing or that it puts innovation at risk, a lot of people are going to believe you. I can even see their influence in the Supreme Court’s decision in the KSR case, written by Justice Kennedy."

What may have started as some academic thoughts from Cecil Quillen, later pushed by Mark Lemley (and others), ended up being mainlined to foster the economic interests of those in the "Coalition for Patent Fairness." Chisum got it right in his law review article. As the vote in the House on HR 1908 illustrated, patent reform (at least this version) is NOT a Democrat/Republican issue. In New Jersey, Rush Holt voted AGAINST 1908 and Chris Smith voted for it; go figure.

Friday, October 24, 2008

With all the talk about Ayers (and UofC's Dohrn), Mark Rudd was sure to surface.

from forward.com:

Rudd took issue with that theory [that Jewish youngsters rebelled against their parents’ Stalinist orthodoxy by embracing Maoism] in a talk he gave at the New Mexico Jewish Historical Society in 2005. Rudd contended that most of his peers in SDS were nice Jewish kids from the suburbs who bought into the American dream until they made it to elite universities, where they realized that white Protestants still ruled.

As a footnote, Bernardine Dohrn's name came up while LBE was at law school, and most of the class of '93 did not have a clue who she was. And that was 15 years ago.

Cunningham was caught by surprise when he learned from the prosecution that Nichols had plagiarized chunks of a college paper on which he had based part of his opinion. The psychologist contended the plagiarism was not important.

When Hill suggested that the plagiarism showed the “seeds of deception,” Cunningham dismissed the suggestion by saying plagiarism was common among college students.

A rather bizarre post on Patently-O links trade secrets with "early" patent filing:

Going unrecognized is another benefit of early filing – the ability to keep secret later developed innovations and parameters. That secret information can then be protected and exploited as trade secret information.

AP -- The Newark Star-Ledger will reduce its newsroom staff by nearly half through voluntary buyouts as New Jersey's largest newspaper seeks to return to profitability. Jim Willse, the Star-Ledger's editor, said 24 Oct 08 that the newspaper accepted 151 buyout offers from its news staff, or about 45 percent of its 334 editorial employees. He said 17 buyout applications were rejected.

****The New York Times, not doing too well itself, endorsed Obama. Bob Park wrote:The Times, read daily by millions outside New York, today put its influence behind Barack Obama. Describing John McCain as "mired in the past," it was his choice of a running mate "so evidently unfit for the office," that was the decisive act of bad judgment. For what it's worth, What's New joins the New York Times in endorsing Obama, but you already guessed that. What's new?

Thursday, October 23, 2008

Obama's idea of "opening up the patent process to citizen review" would make it much tougher for businesses to challenge the government's judgment on the ownership rights of an invention, which will have a negative effect on the incentives to innovate.

Obama's tech position paper had stated:

Giving the Patent and Trademark Office (PTO) the resources to improve patent quality and opening up the patent process to citizen review will reduce the uncertainty and wasteful litigation that is currently a significant drag on innovation.

To the extent "citizen review" is something like "peer to patent", it would expand the number of people involved in reviewing a patent application. It might place inventors in a position to be harassed by larger competitors, operating under the guise of citizen review. It would not make it tougher for a business (or anyone else) to challenge an issued patent through the procedure of re-examination.

As a separate point, although there is much discussion of "outsourcing of jobs to foreign countries," Obama's immigration policy might be viewed as an "insourcing of foreign workers" to take "American" jobs. Curiously, INVESTOR'S BUSINESS DAILY didn't say a thing about this.

In a recent poll of 500 university staff by the Times Higher Education (Britain)-->

More than three quarters of academics questioned (77%) said pressure on them to give better marks had increased. And 78% believed that student plagiarism was an increasing problem in their institution.

Likewise, in Berlin, the Second Circuit affirmed the application of the fair use defense in a case where the defendants, publishers of "Mad Magazine," had published a volume which parodied twenty-five of the plaintiff's song lyrics in same meter. "The disparities in theme, content and style between the original lyrics and the alleged infringements could hardly be greater." Berlin, 329 F.2d at 545. Cf. Walt Disney Productions v. Air Pirates, 581 F.2d 751, 758 (9th Cir. 1978)(holding that fair use defense cannot apply where the copying is virtually complete or almost verbatim and that parodist may only use what is necessary to conjure up the original), cert. denied, 439 U.S. 1132, 59 L. Ed. 2d 94, 99 S. Ct. 1054 (1979); MCA, 677 F.2d at 185 (holding that where defendant's song "Cunnilingus Champion of Co. C" did not parody plaintiff's song "Boogie Woogie Bugle Boy of Company B," the amount copied by defendants from the original song was so substantial as to be unfairly excessive).

See also Tin Pan Apple, 737 F. Supp. 826-->

That conclusion is not inconsistent with Berlin v. E.C. Publications, 329 F.2d 541 (2d Cir. 1964), the second case upon which present defendants rely. In Berlin the publishers of "Mad Magazine" put together a "collection of parody lyrics to 57 Old Standards which reflect the idiotic world we live in today." 329 F.2d at 543. So that the parody lyrics could be sung, they were written in the same meter as the original lyrics, as illustrated by the parody of "A Pretty Girl is Like a Melody": "Louella Schwartz Describes her Malady." The court of appeals affirmed dismissal of the original song publisher's claims of infringement. Judge Kaufman wrote:

"The disparities in theme, content and style between the original lyrics and the alleged infringements could hardly be greater. In the vast majority of cases, the rhyme scheme of the parodies bears no relationship to the originals. While brief phrases of the original lyrics were occasionally injected into the parodies, this practice would seem necessary if the defendants' efforts were to "recall or conjure up" the originals; the humorous effect achieved when a familiar line interposed in a totally incongruous setting, traditionally a tool of parodists, scarcely amounts to a "substantial" taking, if that [**12] standard is not to be woodenly applied. Similarly, the fact that defendants' parodies were written in the same meter as plaintiffs' compositions would seem inevitable if the original was to be recognized, but such a justification is not even necessary; we doubt that even so eminent a composer as plaintiff Irving Berlin should be permitted to claim a property interest in iambic pentameter.

And, of course, 13 Misc. 3d 1215A; 824 N.Y.S.2d 755 -->

The New York Times prides itself on its motto "All the news that's fit to print." There was also a satiric reference to this in, I believe, Mad Magazine many years ago, "All the news that fits, we print."

Abbott is seeking to extend the patent until May 24, 2011, to account for time it took to research and win approval for its Xience stent, a tiny mesh scaffold used to prop open clogged arteries that went on sale in July. A review by the patent office, which announced the extension in a decision published Tuesday [Oct. 14], is continuing.

In a case in California, Medtronic had attempted to block the impact of the extension on an injunction against Medtronic.

See alsohttp://ipbiz.blogspot.com/2008/10/wyeth-v-dudas-on-patent-term.html

Sunday, October 19, 2008

Wyeth v. Dudas on patent term

At issue was interpretation of 35 USC 154. As to "Chevron deference," there is a citation to Merck v. Kessler, 80 F.3d 1543, and a statement that "Chevron deference does not apply to the interpretation at issue here." However, the court separately noted that the Chevron inquiry, if applied, would end at step one (statute not ambiguous).

Wired has a post Forgotten Experiment May Explain Origins of Life which concerns work by Stanley Miller in 1953 in which samples created by Miller in the 1950's were re-analyzed with the much more sensitive equipment of the 21st century. This work isn't about patents, but contemplate the prior art issues this presents.

From Wired:

Bada stumbled across the original experiment by accident when a colleague of Miller's mentioned having seen a box of experimental samples in Miller's office. Bada, who inherited Miller's scientific possessions after his death in 2007, found the box — literally labeled "1953-1954 experiments" — in his own office.

Inside it were samples taken by Miller from a device that spewed a concentrated stream of primordial gases over an electrical spark. It was a high-powered variation on the steady-steam apparatus that earned him fame — but unlike that device, it appeared to have produced few amino acids, and was unmentioned in his landmark 1953 Science study, "A Production of Amino Acids Under Possible Primitive Earth Conditions."

But Miller didn't have access to high-performance liquid chromatography, which lets chemists break down and classify samples with once-unthinkable levels of precision. And when Bada's team reanalyzed the disregarded samples, they found no fewer than 22 amino acids, several of which were never seen by Miller in a lifetime of primordial modeling.

Perhaps amino acids first formed when the gases in Miller's device accumulated around active volcanoes, said Bada. "Instead of having global synthesis of organic molecules, you had a lot of little localized factories in the form of these volcanic islands," he said.

Would the molecules formed by Miller in the 1950's, but only recognized in 2008, be prior art as of the 1950's? LBE has raised similar timing issues with the case of buckminsterfullerene, C60.

Saturday, October 18, 2008

In the Hatch-Waxman area, Pozen, Inc. announced Par Pharmaceutical Inc. has filed an application with the Food and Drug Administration [FDA] to make a generic version of Treximet, a migraine treatment Pozen developed with GlaxoSmithKline PLC, and shares of Pozen shed nearly 28 percent of their value on 17 Oct. 08

Friday, October 17, 2008

To mebden, who left a comment on the IPBiz post The significance of Joe Biden's plagiarism? , the answers to your questions are already on IPBiz, and elsewhere. Biden's father was some kind of used-car salesman, and was not a coal miner at any time in his life. Various members of Biden's mother's family had gone to college.

As we watch the polling trends in the last week or so, we note that no one really cares about Joe Biden's plagiarism (the clearest example of which was copying five pages of a Fordham law review article while at Syracuse Law) or Joe Biden's misstatement of facts (in his use of the Kinnock speech as applied to Biden; or in his famous reply to Frank). Frank doesn't care about what Biden did, nor does anyone else.

Plagiarism is no obstacle to arriving one heartbeat away from the presidency. But the Glenn Poshard story already foreshadowed that reality.

Police have arrested innocent people due to faulty fingerprint analysis but have not determined how many cases were affected by such errors, police officials said.

A confidential police report details two cases in which charges were dropped after problems with the fingerprint analysis were discovered, the Los Angeles Times reported late Thursday. Police blame shoddy work and poor oversight for the mistakes.

"This is very, very serious," said Rhonda Sims-Lewis, chief of the Police Department's administrative and technical bureau. "We feel very compelled to take quick action when something like this arises. Guilty people can be set free and innocent people can be jailed."

Thursday, October 16, 2008

This case under the Hatch-Waxman Act presents the issue of whether a settlement agreement between a patent holder and a generic manufacturer violates the antitrust laws.

The punchline-->

For the foregoing reasons, we affirm the grant of summary judgment by the District Court for the Eastern District of New York that the Agreements were not in violation of section 1 of the Sherman Act because any anti-competitive effects caused by the Agreements were within the exclusionary zone of the patent. We further affirm the court’s dismissal of the state antitrust claims.

"Patents: a recipe for problems?"

On page 38 of the 3 Oct. 2008 issue of the journal Science, one finds an article titled "Patents: a recipe for problems?". concerning the patented product Plumpy'Nut. [322 Science 38]

Plumpy'nut is what is called a "ready-to-use-food" [RUTF] and Nutriset, along with the French government, own patents to Plumpy'nut, in countries in Europe, North America, and 30 African countries, which will last till 2018. Plumpy'nut is used to treat severe malnutrition. One Plumpy'nut serving of 92 grams has 500 calories and a great deal of protein.

The Science article notes that "MSF and UNICEF, another big buyer, acknowledge that so far there have no shortages nor evidence of price gouging. Nor is the patent valid in many malnutrition hot spots, including India, where [competitor] Compact is building a factory and several other companies are interest as well." [IPBiz notes that author Martin Enserink does not seem to understand there has to be a patent in each country.]

A different letter which states: The goals of the pharmaceutical industry and academia are very different. Industry scientists are focused on discovering a highly specific and potent compound that can benefit human health. Academic scientists focus on finding compounds that can reveal novel cellular mechanisms, a basic tenet in chemical biology. There is also mention of "America Competes Act," PL 110-69.

There is a book review of "Physics for Future Presidents." The review notes: "And if Gore has exaggerated or selectively presented data to further an agenda, that is a common problem in public life that cannot be remedied by a book such as Muller's."

At page 49, one has "Sustainable Biofuels Redux." There is discussion of cellulosic biofuels.

An article "Surface-modified carbon nanotubes catalyze oxidative dehydrogrenation of butane" starts at page 73, and lists Robert Schlogl as one of the co-authors. References 15, 18, and 21 are citations to articles in Carbon.

What if I told you that labor unions, small-business associations, drug companies, physicians’ groups, prominent academics and the Bush administration were all lined up against a major piece of federal legislation currently winding its way through congress? Would the convergence of these normally disparate interests make you suspicious of the legislation, sight unseen?

It should. All these groups have publicly opposed the Patent Reform Act, a bill that’s supposedly aimed at modernizing America’s patent system. Backed by several large technology companies, the measure passed the House last September and is currently under consideration in the Senate.

The text sounds on point EXCEPT for the reference to "prominent academics." Most "prominent" IP law professors backed patent reform. This, of course, may depend on what one means by "prominent."

Wednesday, October 15, 2008

Now comes news that John Heslop-Harrison, one of Britain's most eminent botanists when he died in 1967, deliberately planted rare specimens on Rum 60 years ago in order to "prove" that the Hebrides had escaped the last ice age.

The words "invention" and "gold-plated" both arose in the third presidential debate on 16 Oct. 08, but not in the context of patent law. [For anyone interested, the Joe the Plumber video can be found here]

One commenter on Patent Docs (on a discussion of the Obama/McCain patent law debate by surrogates) had this to say:

As an Obama supporter, I am disappointed to see that he is consulting with Professors Rai and Lemley, because I strongly disagree with previous statements they have made about the patent system and the PTO. On the other hand, Professor Rai's comments above sound much more reasonable and less anti-applicant than the points made in the amicus brief she recently submitted along with Professor Lemley in Tafas v. Dudas. This might suggest that academics feel pressure to write articles or submit briefs that are more controversial than their actual views in order to attract attention,...

Patent Docs had noted of Rai in the Colorado discussion-->

In response, Prof. Rai explained that the gold-plated patent plan (which she noted was first set forth in a paper by Prof. Lemley) had nothing to do with fee structure, but rather, focused on the rigorousness of the examination. She added that "if you want really secure patent rights, you presumably want a rigorous examination." Mr. Reines, however, was skeptical that the USPTO, which is already facing an enormous application backlog, would be able to offer independent inventors and other small entities bulletproof patents (as Prof. Rai alternatively referred to them) without a significant increase in fees.

Just another example of Rai's utter cluelessness. If one wanted a "rigorous examination", one would study the prior art and submit the most relevant prior art to the USPTO on a PTO-1449 form. Beyond that, Lemley (and Rai) were talking about submarine patents in the Tafas brief. Where have they been?

See alsohttp://www.iptoday.com/news-article.asp?id=2976&type=ip

which suggests Patent Docs statements

neither the Senator's website nor his 83-page "Blueprint for Change" (available at his website) make any mention of such patents.

are in need of revision, depending on what one means by Senator Obama's website. [Obama has, in the past, Sikahema'd some of his past positions.]

***UPDATE on Oct. 18, 2008, an email -->

Your email below ended up in my SPAM folder, and I just opened it today (Oct. 18).

If you follow the link to my IPT posting that appears on your blog, patent docs, you will find my quote from Obama's patent policy and a link thereto[ http://obama.3cdn.net/780e0e91ccb6cdbf6e_6udymvin7.pdf], which as of right now seems to work fine. Thus, what Barack Obama said in November 2007 is still available on the internet.

In your text

> Also, my point in yesterday's post (and maybe I needed> to spell it out) was> that Obama appears to have changed his technology issues> webpage between the> time Kevin wrote about his plan last November and my post> last night. All> one needs to do is compare the paragraph on patent policy> that Kevin quoted> in his piece with the paragraph that is on that page right> now (> http://www.barackobama.com/issues/technology/).

you raise a different point. If Obama has changed his policy between Nov. 2007 and now, as it appears on barackobama.com, that is one thing, but the "old words" may still be found.

On my blog, IPBiz, I have raised issues as to situations wherein people completely remove something that was previously posted, and I have referred to that as the Sikahema effect.

One expected the article in the Times-online titled Can law students get away with plagiarism? to have a line, Ask Joe Biden, but it didn't.

Instead, author Rebecca Attwood had text

The reseachers of Plagiarism in UK Law Schools: is there a postcode lottery? found that staff are unable to agree on the dividing line between poor academic practice and misconduct, cases of plagiarism are going unrecorded, and as well as wide variations in plagiarism regulations there is a willingness among some staff to depart from their institution’s official procedures.

As a result, students at different law schools are experiencing a “striking lack of parity” and plagiarists at some institutions are likely to be the “unwitting recipients of good fortune”.

GraniteGeek of the Nashua Telegraph illustrates how a newspaper article can become prior art in a patent litigation. It also illustrates (as does the Ciba-Geigy v. Alza case) that enablement standards for prior art can be looser than for patent applications.

From GraniteGeek [Dave Brooks]:

In the 17 years this column has run in The Telegraph, it has been a lot of things, but until recently, it has never been evidence in a patent lawsuit against a national publisher involving the early days of the Web.

The lawsuit pits a British company called Ablaise [patentee-plaintiff] against Dow Jones Reuters, which put out the Wall Street Journal and various online news services. It revolves around patent No. 6,961,737, dated November 2005, which "relates to serving signals to browsing clients . . . for generating structured pages of human-viewable data."

(...)

Judging from citations in Dow Jones' request to dismiss the lawsuit, filed last week in U.S. District Court in Washington, D.C., my most important paragraph appears to be this:

"The key point of FishWrap is that students can create their own individualized paper. They tell the program what their interests are, and it hunts through (various news services) . . . (and presents stories) in whatever order is requested. It also 'learns' from experience, changing the order of things depending on how frequently you've read them in the past."

FishWrap isn't the only service from the Web's Paleolithic era cited by Dow Jones. There's Thunderstone Bridge, which did on-the-fly text formatting; the "Bobo patent," which dealt with viewing fax pages online; and HTGrep, a Swiss program that did online searching.

Whether all this is enough to invalidate the Ablaise patent claim is beyond me. Software patents are notoriously squishy, and I can't say anything definite about this court fight.

In previous posts, IPBiz has noted that Rutgers football coach Schiano is the highest paid NJ state employee.

At Kansas State, an ASSISTANT coach has a comparable base salary to Schiano's -->

That would be Wildcats assistant Dalonte Hill, Beasley's former AAU coach in the Washington, D.C., area. Hill, entering his sixth season as a college assistant, will make more money for the 2008-09 season than the entire three-man staffs at Ohio State, Washington State and Wisconsin and only $5,000 less than the staff at Texas, a survey done by Rivals.com shows.

K-State released Hill's contract in May. The school paid him $400,000 in 2007-08, and it will pay him $420,000 a year – $150,000 in base salary and $270,000 in "additional compensation," defined as "television, radio, internet, promotional and other services" – for the next four years. He is entering his third year at K-State.

See also

http://ipbiz.blogspot.com/2006/11/high-pay-for-public-university.html [Note that Purdue University is the home of the current, and mismanaged, BubbleGate scandal]

Tuesday, October 14, 2008

New Energy Times reproduced an AP story which began --> A Purdue University scientist [Taleyarkhan] who was reprimanded for research misconduct over claims he produced nuclear fusion in tabletop experiments is suing two other faculty members for alleged defamation.

Separately, New Energy Times made its own accusations about charges A.2 and B.2 against Taleyarkhan-->

Here is how A.2 was manufactured. The committee first took Suslick's allegation and amplified it to include the legal language "falsifying intent." Second, it changed Suslick's statement from "left his name off the publication" to "caused Mr. Adam Butt's name to be added," and third, it introduced an opinion, "not a significant contributor," about Butt's involvement with regard to the paper.

(...)

Allegation B.2: "Dr. Taleyarkhan with falsifying intent stated in the opening paragraph of his paper in Physical Review Letters 96:034301 (2006) that "these observations [referring to Science 295:1868 (2002)] have now been independently confirmed."

Again we have a case of manipulation. As with allegation A.2, new language is introduced - incriminating legal language - "falsifying intent." Also, Inquiry Committee allegations C5 and D3 have been reworded significantly from referring to "press characterization" to "opening paragraph of his paper in Physical Review Letters."

Arnold & Porter partner David Eggert, representing Philip Morris on appeal in a complex civil RICO case that is set for oral argument today, raised this point in a brief: the federal district judge who sided with the government in 2006 in bringing sanctions against Big Tobacco copied government language—right down to typographical errors.

U.S. District Judge Gladys Kessler’s 1,653-page ruling, Eggert wrote in an appellate brief, “reproduced large sections of the government’s proposed findings verbatim, complete with the government’s typographical errors. Indeed, over 80 percent of the court’s findings were simply copied from the government’s proposed findings.”

Arnold & Porter lawyers ran Kessler’s landmark decision through a program called “WCopyfind,” plagiarism-detecting software distributed for free by a physics professor at the University of Virginia. The program, found at the “Plagiarism Resource Site,” detects shared text between documents. Eggert noted two typographical errors in a footnote. “The district court’s word-for-word reproduction of the government’s proposed findings led to serious deficiencies that the court itself acknowledged,” Eggert wrote.

Duh, IPBiz hopes not many people find this a newsflash. Court opinions copy stuff from briefs, findings of fact, findings of law, etc. Nothing new here. And, of course, one Harvard professor (Dershowitz) defending Laurence Tribe remarked that law promoted a culture of plagiarism. And Joe Biden copied five pages of a law review as a student at Syracuse Law and didn't get expelled. Who's kidding whom here?

On October 14, Judge Rader wrote an opinion in the Qualcomm/Broadcom matter which determined:

#1. Broadcom's '983 patent is NOT invalid.#2. There is NO direct infringement by Qualcomm.#3. Because the ITC misapplied the standard for induced infringement, the CAFC issued a vacate and remand.#4. The ITC has no statutory authority to issue a limited exclusion order [LEO] against downstream products of non-respondents, and the CAFC issued a vacate and remand.

On induced infringement, the CAFC cited DSU v. JMS, 471 F.3d 1293. The Broadcom case becomes an example that an appellate court will apply the law as it exists at the time of the appeal, not at the time of the trial court (eg. In re Schooner Betty). Qualcomm won on induced infringement because the law changed.

On the LEO point, the CAFC cited Chevron, 467 US 837, and in the "Chevron two-step", only reached step one, and ended the Chevron inquiry. [Relevant to the future Tafas case at the CAFC.] In the end, the CAFC here said Broadcom needed to get a GEO, not a LEO. The term "ultra vires" comes up in the decision.

Monday, October 13, 2008

Republicans reacted by, for the first time, invoking the scandal that ended Biden's 1988 presidential campaign, saying that the Democrats' plan "mirrors the proposals that President Hoover implemented at the onset of the Great Depression."

"It's plagiarism of the very worst economic policies in American history," McCain spokesperson Ben Porritt said in a statement.

Nonetheless, it is likely to appear a bit unseemly to a good segment of the public for the stem cell agency to hand out tens of millions of dollars while California is so hard pressed that it may have to ask the federal government for a $7 billion short term loan so that it can pay its bills.

Is the California stem cell agency performing work that is beneficial to the economy of the state of California?

Any fair-minded person has to respond affirmatively to that question, and perhaps even some who are not so fair-minded.

But does CIRM have to spend $350,000 of taxpayer funds to prove its economic value? Will such an effort convince any skeptics that the $3 billion ($6 billion including interest) stem cell research program is economically worthwhile? The answer to both those questions is no.

The logical conclusion to californiastemcellreport's inquiries is that CIRM is NOT "any fair-minded person".

Separately, CIRM is taking money from California taxpayers that desperately needs to be applied elsewhere. Taking money for CIRM and having to borrow money to run the state is NOT beneficial to the economy of the state of California.

“It’s very suspicious to me” that the allowance rate - or applications accepted - was 78 percent a few years ago and is now around 40 percent, Michel said at a BNA/ABA intellectual property patent law conference in Washington. “That seems like a wild gyration to me.”

Of course, Quillen and Webster, and some out of touch academics, were talking about a 97% rate!

Of examiner retention at the USPTO-->

Michel also said it’s “very worrisome” that the USPTO is hiring 1,000 new patent examiners per year, but there are still almost as many leaving. There are a “substantial” number of examiners who have been at the USPTO for less than three years, the judge said, and many are working from home because of a lack of workspace at USPTO.

The USPTO says that as of 30 September, approximately 2,900 examiners of the 6,000 total have been with the agency less than three years. About 1,200 examiners are being hired each year. As to the space issue, telework is an option available to many patent examiners once they reach a certain level of experience and competency.

Of questionable employee practices at the USPTO, see PatentHawk's post of material from the Oct. 08 POPA newsletter which begins:

When USPTO Director Jon Dudas let the word out that too many employees receive outstanding ratings at end-of-year performance appraisals, one supervisor baselessly lowered a Patent Cooperation Treaty (PCT) special programs examiner's rating on one critical element, causing the employee to lose a significant portion of her Gainsharing Award. POPA filed a grievance on the employee's behalf that ultimately resulted in the invocation of binding arbitration on the issue.

The employee won the grievance.

One commenter to the blog noted:

Hehh, that "it's not possible that the agency has that many outstanding employees" attitude seems to directly contradict Jon W. Dudas' response to Congress, where he discounted the studies that called into question the USPTO's 30-year old production goals by saying, "More important, neither study recognized that with nearly 6,000 talented scientists and engineers, there is no 'average patent examiner.' The key to establishing the optimal production goals is to be sure that the system allows for maximum flexibility and maximum opportunity for eachand every examiner. Examiners are intelligent and hard working."

A recent Court of Appeal decision in the UK suggests that so-called "software" patents may become more prevalent in the UK, and that UK policy may conform more closely to that of the EPO.

A blog noted:

The Court of Appeal has refused to accept the UK Intellectual Property Office's rejection of a patent for a piece of software in a move which experts say will open the door for more software patents in the UK.

Symbian has won the right to patent a piece of software which makes other software run more quickly. The Court of Appeal rejected the UK Intellectual Property Office (UK-IPO)'s objections to the application.

The software in question was granted a patent by the European Patent Office (EPO), but the UK-IPO rejected an application to make that patent active in the UK.

The High Court had previously backed Symbian's case, and the Court of Appeal has reaffirmed that decision.

the Court held that differences in outcome between the UK IPO and the EPO should be minimised. If claimed subject matter was not an excluded business method, mathematical method or mental act, the right question was whether it made a “technical contribution” having regard to the practical reality of what was achieved. Increase in reliability and speed whether within or outside the computer were advantages that would normally suffice to ensure patentability.

Sunday, October 12, 2008

Another register correspondent later reported on his efforts to get the Open University and the IEEE, which had published the offending paper in IEEE Software (a prestigious, peer reviewed, academic journal) to either defend or modify their actions, but essentially got stonewalled on the gibberish and relevancy issues - and could get the IEEE to move no further than a weak acknowledgment that:

… this paper has been found to be in violation of IEEE’s Publication Principles.

This paper contains portions of original text from the sources cited below. Text from Paper 1) was reused without attribution. Text from Paper 2) was reused with attribution but without being clearly delineated from the above authors’ own text.

The problem with "software" patents may not be the patents themselves but the generally confused state of the IT industry. The blogger went on to write:

With that in mind, I’d like to focus on the content quality issue. Here’s the example from Stob’s first article on this:

The following is one of the passages we were instructed to discuss in our homework. It purports to explain how companies choose open source software.

Open source projects that are too platform-specific aren’t good either. For example, many open source content management system developers have based their spawning, multiple (often competing), and derivative projects on a single platform. To develop them into useful applications requires excessive, code-based customization. While extensibility is important, customers expect to see the inclusion of core features, together with the ability to configure key settings. Open source components with low code volatility, high platform heterogeneity, and high configuration and optimization space are the best choices. Robust test cases and user credibility are other dimensions developers must consider to identify the right components.

I assure you that context improves the sense of the above not one pica-jot.

I spoke to a completely credible liberal academic (my wife) on this and was told that the paragraph quoted may not exemplify the clearest use of English but makes perfect sense - in the sense that a reader of goodwill can easily make sense of it.

Then the blogger got down to the basic problems-->

The real issue, in other words, isn’t how the plagiarism got past the IEEE’s peer reviewers, but how they could accept this gibberish as worthy of publication.

My answer to that comes from work I did a few years ago reviewing some introductory IT textbooks (full version here.)

These books account for more than 90% of their markets and are filled with errors of fact, errors of omission, and deeply rooted structural and anachronistic errors that together leave the student unable to form any coherent mental map of the IT industry - and my bet is that IEEE reviewers are both graduates of, and teachers of, courses in which books like these form the instructional basis.

IT teaching, in other words, has been going steadily from bad to worse - with the quality of instructional materials driving down the quality of instruction and that, in turn, driving down the quality of published “research” and the value of the peer review stage going into that process.

In the law review business, the Stanford Law Review accepted Mark Lemley's text that Gary Boone invented the integrated circuit. The University of Chicago Law Review accepted Lemley's text that the inventors of the transistor thought it was only good for hearing aids, based on a citation to an interview with an economist who in turn cited a non-existent article in the New York Times. How could they accept this gibberish?

CBS Sunday Morning on Obama race issue

The lead story on CBS's Sunday Morning on October 12, 2008 was how the (rarely mentioned) race issue will play out in the presidential campaign. This was noted to be a vexing issue, hiding in plain sight, and the electoral decision is unavoidably colored by race.

There was lots of commentary from academics, including by Melissa Palmer of Princeton (Michelle Obama graduated from Princeton). Joe Trippe and Dan Bartlett were also quoted. Anthony Greenwald developed a questionnaire, the results of which indicated that 75% of respondents favored white over black.

There was mention of the "Bradley effect," a term arising from the loss of LA mayor Tom Bradley in the California race for governor in 1982, even tho the polls showed Bradley winning. There was also mention of poll error in the Virginia gov race involving Douglas Wilder. Some academic got on and said polls were better now, pointing to the Mass gov race (Deval).HOWEVER, IPBiz invokes the GROSS failure of polling in the NJ stem cell vote in 2007.

A lead-in to the CBS story suggested that the race issue was the underreported story. IPBiz notes that Biden's plagiarism is also underreported.

***Elsewhere on Sunday Morning-->

On Oct. 12, 1901 Teddy Roosevelt changed the name of the President's residence from "executive mansion" to White House.There was a discussion of the Morris Jumel House in Harlem, HQ of George Washington in 1776.

Barbara A. Caulfield was Executive Vice-President and General Counsel of Affymetrix, Inc., in Sunnyvale, CA.Colleen Chien, a registered patent attorney, was at Stanford School of Law (Center for Law and the Biosciences) in 2006 and graduated from University of California, Berkeley, School of Law (Boalt Hall), J.D., 2002, and thus has ties to Mark Lemley, who is not a registered patent attorney. She joined Santa Clara in 2007.One can view Luftman.Lynn Pasahow graduated from University of California, Berkeley, School of Law (Boalt Hall), J.D., Order of the Coif 1972Stanford University, B.A., Phi Beta Kappa, 1969

Promega reached the sum of $1 billion by claiming triple damages, as allowed by the law, plus a $10,000 charge for each time a Taq purchase generated royalties for Roche. "This looks like a chance to go for big bucks," says Jerry Selinger, a Dallas patent lawyer and board member of the American Intellectual Property Law Association.

But Selinger and others don't give the suit much chance of success. For one thing, the Department of Justice, after reviewing the lawsuit's claims, declined to participate in prosecuting it. And although the future of Roche's Taq patent is uncertain in the United States, the European Patent Office issued a final ruling upholding it on 30 October.

Of Doug Luftman: Douglas Luftman is Associate General Counsel of Intellectual Property at Palm, Inc. in Sunnyvale, California. Mr. Luftman’s current areas of focus include strategic intellectual property counseling, patent portfolio development, intellectual property assertion and licensing strategy, IP asset acquisitions, standards development strategy and open source management strategy. Prior to joining Palm, Mr. Luftman’s roles have included Vice President, General Counsel and Secretary of Caspian Networks, Inc., West Coast Counsel of CIENA Corporation and Senior Intellectual Property Counsel for Intel Corporation’s Communications Group. Prior to working in-house, Mr. Luftman was an attorney at Fenwick & West LLP, Silicon Valley Office. Mr. Luftman received his Juris Doctorate degree with honors from the George Washington University Law School, Washington DC, where he was Technical Editor of the Law Review and externed for The Honorable Randall R Rader of the United States Court of Appeals for the Federal Circuit. Mr. Luftman received his Bachelors of Science degree in Electrical Engineering from the University of California, Los Angeles (UCLA).

[Mark Lemley has been considered an advisor to Barack Obama on IP matters, and was a co-author of a paper on gold-plating patents, which idea was advanced by Obama.]

See alsohttp://ipbiz.blogspot.com/2008/09/ta-tah-to-quillenwebsterlemley.htmlhttp://ipbiz.blogspot.com/2008/08/lex-luther-vanquishes-four-amigos-of.html

Friday, October 10, 2008

Observers say Immersion's era of aggressive litigation and licensing was a success. In defending its patents on "haptic" technology for applying touch sensation and control to computer programs, the company beat Sony, got money out of Microsoft, and has signed up medical, car and cell phone companies for patent licenses.

Last year, the company turned a profit for the first time ever because of the Sony money. It also brought in about $12 million of its $35 million in revenue from royalties and licensing.

"It's a good accomplishment," said Joe Chernesky, president of IP investment bank IPotential.

But to others in the world beyond IP lawyers, Immersion is anathema.

"I'm not a fan of their IP licensing program," said Michael Masnick, CEO of Techdirt, a consulting company that also has an eponymous blog covering technology, innovation and the law.

"I just thought they were using it to set up a tollbooth against some of the companies that were doing real innovation in the space," Masnick said. "Instead of focusing on commercialization, they focused on making it more expensive for others to commercialize."

Clinical psychology professor Madonna G. Constantine, fired by Columbia University on June 23, argues in papers filed October 10 in New York state Supreme Court (trial court) that her discharge was arbitrary, irrational and unauthorized.

http://ipbiz.blogspot.com/2008/07/village-voice-picks-up-constantine.html ["Whether or not the perpetrator of the noose on Constantine’s door is ever identified, there should be plenty of work for lawyers to go around in upcoming semesters."]

As a separate piece of trivia, the first Congressional investigation ever conducted pertained to the Battle of Beaver Dams in which Americans (led by the first U.S. President (under the Articles of Confederation)) were decisively beaten by Indians, sustaining more deaths (623) than inflicted upon Custer at Little Big Horn. Does anyone remember the battle and why the American commander (unlike Custer) was spared by the Indians? The Indian commander would later receive from Colonel Thaddeus Kosciusko a matching pair of pistols along with instructions to use them on "the first man who ever comes to subjugate you."

The US slowdown has kicked off a heated debate in the US legal circles. At the heart of debate is a recent notice by the United States Patent and Trademark Office (USPTO) barring companies who send information overseas regarding inventions and patents without government clearance. While some believe offshoring is good as it cut costs for legal firms, lawyer groups in the US are against it.

Treading on extreme grounds, some also believe the notice might sound a death knell for the LPO industry, while a section of Indian lawyers believe it is the result of hectic lobbying by a section of US law fraternity.

“It is the vested interest of a group, which is blowing it out of proportion. The notice does not mean much to us since we do not outsource any sensitive information. Some percentage of the LPO industry might be affected due to the market sentiment, but it will have no bigger impact,” said CPA Global’s India head Bhaskar Bagchi. CPA is one of the largest LPOs in the world.

Meanwhile, the Wall Street meltdown has resulted in a slew of bankruptcy filings, due diligence and lawsuit drafting work, a lot of which is being outsourced. Many believe that the US notice is just a ploy by anti-outsourcing lobby to prevent more of such work going to India. The cost of preparing a patent application in India averages about $2,000, whereas the cost to prepare the same application in the US ranges between $8,000 and $15,000. The median annual salary of a lawyer in the US is about $95,000, while in India it’s around $20,000 per year. The primary function of this notice is to prevent publication of an application as a patent where such disclosure would be detrimental to the US national security. Additionally, the Act provides for the licensing of applications for export for the purposes of filing for patents abroad.

Says Mumbai-based LPO, Pangea3’s co-founder and CEO Sanjay Kamlani: “This notice is just a reiteration of a rule that already existed before. In my view, by this notice, the US government accepts outsourcing as an inevitable part of economic transactions.” However, some US attorney’s look at it very differently. “Finally, someone has noticed that our export laws prohibit the sending of information relating to technology overseas without a proper license. This should signal an end to the $2.2 billion per year patent outsourcing to India. For admittedly selfish reasons I am happy that export regulations will now be enforced as written,” writes a pro-regulation US patent attorney, Gene Quinn in his blog.

IPBiz notes that it is not clear that the current slowdown "kicked off" this debate, which was simmering on places like Greedy Associates for years. It's also not clear that the "law fraternity" opposes this, as certain law firms in Minnesota and Connecticut have been outsourcing for years. Outsourcing has the potential to be a profit center, just as photocopying and the use of rented attorneys can be profit centers. Clients are billed at a rate higher than the cost to the law firm. ALSO, life in India hasn't been so sweet in days of late. India's Tata Motors announced on Oct. 7 that it would produce its low-cost, high-profile "people's car" [the Nano] in the state of Gujarat, just a few days after abandoning its nearly completed factory in the Communist-ruled state of West Bengal because there was no end to the violence and threats to workers' safety. Tata reroutes 'people's car' to the safety of Gujarat

***Separately, of the recent news about AMD splitting, we have another outsourcing argument -->

Intel Corp on 7 Oct 08 said that the AMD manufacturing split could violate its patents. The chip giant expressed concerns with AMD's latest efforts to outsource its factories and creating a new foreign company. Intel licenses its x86 chip architecture to AMD. [from newsoxy]

[The next day] Oct. 8, AMD fired back and charged that the new company does not violate any previous agreement with Intel.

“We are completely confident the structure of this transaction takes into account our cross-license agreements,” Phil Hughes, an AMD spokesman, wrote in an email. “Rest assured – we plan to continue respecting Intel’s intellectual property rights, just as we expect them to respect ours.”

Intel spokesman Chuck Mulloy told eWEEK that the company will defend its chip patents against any violations and Intel continues to review its options. Mulloy added that Intel wants AMD to publish a full version of the licensing agreement – a redacted copy is available – as the deal to create the new foundry company unfolds. (The two companies have been signing licensing agreements with each other since the mid-1970s.)

**Of the AMD re-structuring, eWeek noted -->

The deal that will spin off Advanced Micro Devices’ manufacturing facilities into a new joint venture company will not violate the company’s licensing agreement with Intel, an AMD spokesman said.

On Oct. 7, AMD announced that it would take a bold step and split the company in two in order to better compete in the x86 chip market. While AMD will remain responsible for CPU and graphics development, design and marketing, a new company – temporarily called The Foundry Company – will be formed around AMD’s two Dresden, Germany fabrication plants or fabs. Advanced Technology Investment Company (ATIC), a technology investment backed by the government of Abu Dhabi will own half of the new company.

In a separate twist, IPBiz notes that the "scaffold plank incident" is taught on Semester at Sea, the drinking cruise that expelled Allison Routman of Ohio University for copying fragments of three sentences from wikipedia.

In the real world, one notes how little plagiarism counts, as seen most vividly by the absolute silence on Joe Biden's plagiarism of five full pages from an article in the Fordham Law Review. Joe did not get expelled from Syracuse Law School. [In one other bit of irony, note that Lisa Dolak is a graduate of, and teaches at, Syracuse Law School.]

Mather, like others in his time period, did not recognize his sources. In the 18th century, plagiarism, which is based on the right to own intellectual property, did not exist. Even though by present day standards what Mather and many others in that time did is classified as plagiarism, it was acceptable and common then. IPBiz notes for the nth time that plagiarism and copyright infringement are distinct concepts, and a charge of plagiarism is NOT based on the right to own intellectual property.

In the article, Mather's "sin" was copying two paragraphs-->

In Mather's "Biblia Americana," he takes whole sections and paragraphs from other writers on the same subjects. Simon Patrick wrote "A Commentary Upon the Two Books of Chronicles: Ezra, Nehemiah, & Esther (by Symond, Lord Bishop of Ely)"; Mather took two full paragraphs and placed it in his work, verbatim. Mather defended his writing method by stating it was for the greater glory of God and not for his personal increase of fame.

IPBiz notes, gee, Joe Biden took five pages and walked. Glen Poshard took more than two paragraphs and walked. Mather was a piker in comparison.

The article also noted: In Mather's time, many people believed knowledge was decreasing and limited; writers simply reproduced the ideas and concepts of others, adding their own opinion with it. The technology of organizing knowledge and the concern of owning ideas has since changed the writing method, according to Maddux.

Austin Peay State University needs some education in plagiarism and IP!

Charles Greenwood and the HumanCar

Supposedly can go 60 mph. At $15,000, a real steal, and you can use it to generate electricity for your home, too. [which might make sense, provided food is less costly than gasoline in the dystopic future.]

In the near term, more likely to appear in a sequel to "Mad Max" than at your neighborhood store.

The following is an article by Dr. Richard B. Belzer (former White House staff economist)-->

BACKGROUND

Today the PTO published a notice in the Federal Register inviting public comments on paperwork burdens associated with the Ex parte Appeal Rule (73 Fed. Reg. 32937-32977, June 10, 2008).

The Paperwork Reduction Act (44 U.S.C. 3501 et seq, 5 C.F.R. Part 1320) is a very important but almost completely unknown law. It's purpose is to protect the public from abusive governmental demands for information. Unlike previous notice-and-comment periods, this time comments go to the Office of Management and Budget, a neutral arbiter outside the PTO whose statutory responsibility is to ensure that federal agencies treat the public fairly.

THIS ICR IS VERY IMPORTANT

Without OMB's approval, the Patent Office has no legal authority to compel patent applicants to comply with the Ex Parte Appeal Rule.

WHAT YOU NEED TO DO

Obtain the documentation from the PTO.

The first thing to do is send an email request to the PTO asking for a copy of the relevant documents:

Please include a bcc to me (rbbelzer [at] post.harvard.edu) so that I can count how many requests are sent to the PTO as a result of this alert.

You should receive at least two documents (we are awaiting our copies). The text of the ICR will contain summary information. By regulation, the Supporting Statement must include objectively supported estimates of burden, and these estimates must be transparent and easy for you to reproduce to see how they did it.

For reference, the definition of paperwork "burden" is an expansive one; see the text below.

Estimates based on the "professional judgment," "belief," or "opinion" of Patent Office personnel, or estimates with no disclosed basis, do not qualify as "objectively supported."

Submit a public comment to OMB.

For the next 30 days, OMB will be accepting public comment on the paperwork and recordkeeping burdens associated with the Appeal Rule. By law, OMB has 60 days to either approve or disapprove the ICR. That deadline will run out very close to December 10, 2008, effective date of the Appeal Rule. For that reason, it is imperative that public comments be submitted as early as possible. Do not wait until Day 29 to decide to do this.

It is essential that OMB hear from you. The more thoughtful, reasoned, and documented public comments OMB receives, the better. Usually, OMB does not receive any public comments at all, and in these cases it is OMB is compelled by necessity to assume that what the agency provided is valid and reliable. Your job is to make sure OMB gets higher quality information.

Public comments on the ICR should be sent as soon as possible, and must be sent by November 7, 2008, via email to:

Nicholas A. FraserDesk Officer for USPTOOffice of Information and Regulatory AffairsOffice of Management and BudgetNicholas_A._Fraser@omb.eop.gov

What to include in your public comment.

Public comments to OMB should address the following issues:

Has the PTO provided an objectively-based estimate of the number of hours it will take to comply with the Appeal Rule? Historically, the Patent Office has severely underestimated the number of hours, and has failed to provide any analytical transparency into the sources or methods employed. Often, the PTO's burden estimates consist of mere "judgment" or "belief."

Has the PTO provided an objectively-based estimate of the opportunity cost of each of these hours? Historically, the Patent Office has significantly understated the hourly cost of attorney time, and assumed that tasks normally performed by attorneys can be performed by lower-cost paralegals and administrative staff instead. Has the PTO provided an objectively-based estimate of the number of applications expected to be appealed? There is considerable controversy about how many appeals should be expected. For purposes of public comment on this ICR, the Continuations Rule, currently enjoined by the District Court in Tafas v. Dudas but now under appeal, should be assumed to apply. Do not assume that Tafas will be upheld. You are entitled to take the PTO at its word, that issues formerly resolved through continuations must now be resolved through appeal. Did PTO contact you for assistance or information to help them estimate the burden associated with the Ex parte Appeal Rule? By law and regulation, the PTO is required to consult with those who would bear the burden of complying with information collection requirements. They do not have to consult with all of you, but they do have to consult with some of you. Statements from the organizations that logically should have been consulted (e.g., AIPLA, ABA-IP, IPO, NAPP) stating that they were not consulted would be especially helpful. Which elements of the Ex Parte Appeal Rule require you to submit information that the PTO already has in its possession, albeit in another form? It is against the law for OMB to approve the collection of duplicative information. Thus, most contents of the appendix required by current and proposed 37 C.F.R. § 41.37(t) are simply illegal. Are there any other provisions that you believe are duplicative?

I'd very much appreciate your help ensuring that OMB receives a rich set of highly informative public comments. I would like to make sure that comments are submitted by a variety of entities (organizations, firms, large, small, from a variety of technological areas), and I can help you target your efforts to be informative without being tendentious. A series of conference calls may be scheduled to assist you. To indicate interest in participating, please contact me by email at rbbelzer [at] post.harvard.edu or by phone at 703-780-1850.

Richard B. Belzer

APPENDIX: DEFINITION OF "BURDEN"

5 C.F.R. 1320.3(b)(1):

Burden means the total time, effort, or financial resources expended by persons to generate, maintain, retain, or disclose or provide information to or for a Federal agency, including:

(i) Reviewing instructions;

(ii) Developing, acquiring, installing, and utilizing technology and systems for the purpose of collecting, validating, and verifying information;

(iii) Developing, acquiring, installing, and utilizing technology and systems for the purpose of processing and maintaining information;

(iv) Developing, acquiring, installing, and utilizing technology and systems for the purpose of disclosing and providing information;

(v) Adjusting the existing ways to comply with any previously applicable instructions and requirements;

(vi) Training personnel to be able to respond to a collection of information;

(vii) Searching data sources;

(viii) Completing and reviewing the collection of information; and

(ix) Transmitting, or otherwise disclosing the information.

*****The PTO has not made its submission to OMB requesting clearance under the Paperwork Reduction Act for the Appeal Rule easily available on its web site. However, the PTO's submission is available at the OMB web site. The single most important document is this one

http://www.reginfo.gov/public/do/DownloadDocument?documentID=89627&version=0 Further background is available at: http://www.reginfo.gov/public/do/PRAViewDocument?ref_nbr=200809-0651-003 http://www.reginfo.gov/public/do/PRAViewICR?ref_nbr=200809-0651-003#section0_anchor (click the "All" box at the top of the page)

The materials on the Appeal Rule and the public comments are at http://www.uspto.gov/web/offices/com/sol/notices/72fr41472.pdf http://www.uspto.gov/web/offices/com/sol/notices/73fr32938.pdf http://www.uspto.gov/web/offices/pac/dapp/opla/comments/bpai/bpai1.html http://www.uspto.gov/main/homepagenews/2008sep03.htm

A Notice of Allowance was issued to the University of California by the United States Patent & Trademark Office ("USPTO") for composition of matter claims pending in a patent application licensed by Cytori Therapeutics . The allowed claims cover a population of stem cells, progenitor cells and other replicating cells, which can be obtained from human adipose tissue.The allowed patent broadens Cytori's current patent portfolio for adipose-derived cell therapies and strengthens Cytori's ability to freely develop future therapeutics. The cells covered by the allowed claims are believed to encompass a clinically important subpopulation of cells within adipose tissue. The subpopulation of human cells described in the patent was defined by characterizing specific cell surface markers for cells, which posses the ability to self replicate and differentiate toward one or more lineages.

First inventor Marc H. Hedrick, M.D., is President, Cytori Therapeutics, once of UCLA (From 1998 until 2005, he directed the Laboratory of Regenerative Bioengineering and Repair for the Department of Surgery at UCLA.)

IPBiz also notes published US application 20060228796, titled Adipose tissue-derived adult stem cells for the repair of articular cartilage fractures and uses thereof , assigned to Artecel, Inc. , which has first claim:

A composition comprising an isolated adipose tissue-derived adult stem cell that can differentiate into a chondrocyte in combination with a viscous, biocompatible liquid material implanted into a host, wherein the host is in need of articular cartilage repair.

IPBiz notes that if the names Hedrick and Artecel sound familiar, they should. There was a certain inventorship case in CD Cal, discussed by, among others, Patent Docs, who wrote:

On June 9, 2008, the University of Pittsburgh obtained a judgment correcting inventorship of U.S. Patent No. 6,777,231 under 35 U.S.C. § 256. The U.S. District Court for the Central District of California determined that several of the inventors, who had assigned their rights to the Regents of the University of California, were not properly named as inventors, thus extinguishing the Regents' rights and nullifying a license from the University of California to Cytori Therapeutics, Inc. As a consequence, the Pittsburgh licensee, Artecel Inc., became the sole licensee of the '231 patent.

(...)

As granted, the '231 patent named Adam J. Katz, Ramon Llull, William J. Futrell, Marc H. Hedrick, Prosper Benhaim, Hermann Peter Lorenz, and Min Zhu as inventors, and the patent is assigned to both the University of Pittsburgh and the Regents of the University of California.

(...)

Based on these factual findings, the District Court concluded that the University of Pittsburgh had carried its burden of showing by clear and convincing evidence that the UCLA inventors (Benhaim, Hedrick, Lorenz, and Zhu) were not inventors of the invention claimed in the '231 patent. According to the Court, the evidence established that Dr. Hedrick's work regarding differentiation of adipose-derived stem cells into nerve cells occurred after Drs. Katz and Llull conceived of the claimed invention, i.e., adipose-derived stem cells that could be induced to differentiate into multiple cell types (adipose and muscle cells). The Court concluded that the UCLA inventors' work merely "confirmed the operability of the invention." Thus, only Drs. Katz and Llul are properly named as inventors of the '231 patent.

As a result of the case, the licensee of the University of Pittsburgh, Artecel Inc., became the sole licensee of the '231 patent.

Patent Docs also wrote -->

Cytori Therapeutics, the University of California's licensee, had this to say on its website regarding the District Court's decision:

Cytori believes the recent decision on the '231 patent is in error and that work completed at the University of California was critical to obtaining this patent. Cytori recognizes that [the] '231 [patent] may have value in the long term in areas unrelated to the Company's existing product pipeline, and consequently Cytori and the UC Regents are reviewing their legal alternatives to this ruling, including that of appealing this decision to the Federal Circuit. It is Cytori's intention to aggressively protect its business, its intellectual property and its investors.

However, the company also asserts that losing its rights to the technology claimed in the '231 patent is not critical to its business:

The Court's decision [in the '231 inventorship lawsuit] does not impact Cytori's primary ongoing business activities or product development pipeline because Cytori's products do not practice the '231 patent. Cytori's Celution® System yields an output comprising a diverse mixture of cells found in adipose tissue whereas the '231 patent covers a narrowly defined population of adipose derived adult stem cells in an environment substantially free of other cellular materials found in adipose tissue. The output that is covered by the '231 patent requires different isolation or processing techniques, which are unnecessary for therapeutic efficacy, and which the Celution System, by design, does not perform.

Cytori's Celution® System device is protected, according to the company, by U.S. Patent No. 7,390,484.

“One who simply provides the inventor with well-known principles or explains the state of the art without ever having a firm and definite idea of the claimed combination as a whole does not qualify as a joint inventor.” Ethicon, 135 F.3d at 1460 (quotation marks omitted); see Caterpillar Inc. v. Sturman Indus., Inc., 387 F.3d 1358, 1377 (Fed. Cir. 2004) (“[A] person will not be a co-inventor if he or she does no more than explain to the real inventors concepts that are well known in the current state of the art.” (quotation marks omitted)). Moreover, a joint inventor must “contribute in some significant manner to the conception or reduction to practice of the invention [and] make a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention.” Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998); see Caterpillar, 387 F.3d at 1377 (quoting Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1473 (Fed. Cir. 1997)). Here, Borg Indak asserts that Benson contributed the extender for a lumbar support adjustor. However, the contribution of the extender is insignificant when measured against the full dimension of the invention of claim 11, not just because it was in the prior art, but because it was part of existing automobile seats, and therefore including it as part of the claimed invention was merely the basic exercise of ordinary skill in the art. See Fina Oil, 123 F.3d at 1473 (“The basic exercise of the normal skill expected of one skilled in the art, without an inventive act, also does not make one a joint inventor. Therefore, a person will not be a co-inventor if he or she does no more than explain to the real inventors concepts that are well known and the current state of the art.” (citations omitted)); see also Eli Lilly, 376 F.3d at 1362 (“A contribution of information in the prior art cannot give rise to joint inventorship because it is not a contribution to conception.”).

Tuesday, October 07, 2008

McCain science advisers: two guys and a dog?

The 26 Sept 08 issue of Science presents the winners in the 2008 visualization challenge. First place went to "The Glass Forest" which comprised an image of the diatom Lcimophora ehrenbergii on a marine invertebrate Eudendrium racemosum.

The 26 Sept 08 issue of Science reports that descendants of the Galapagos Floreana tortoise, once thought extinct, is alive and well on Isabela. Thank DNA. [p. 1749] On the next page, issues about an NSF grant related to the World of Warcraft [WoW].

Concerning the talk of Michael Reiss, once director of education at the Royal Society, Science wrote:

"His comments--or perhaps more accurately the spin placed on them by headline writers, newspaper columnists, and editorialists, ignited a firestorm." [p. 1752]

At page 1758, one has "Proteomics Ponders Prime Time." It discusses the potential of a full-scale human proteome project [HPP].

At page 1762, there is discussion of the role of Harold Varmus in the campaign of Barack Obama: A panel of which Varmus is a member prepared Obama's response to 14 questions presented by ScienceDebate 2008. There was an interesting [anonymous] quote in the Science article:

Waters argues that the specific disclaimer of divinylbenzene should suffice to disclaim the polymers in the particles of the 30 μm columns, because those particles are “made from 80% divinylbenzene.” Br. of Defendant-Cross Appellant Waters Corp. at 42. But Waters ignores the fact that a divinylbenzene molecule alone and a copolymer containing 80% divinylbenzene are different chemical compounds, with different properties—including different rigidities. By analogy, if a patentee disclaims “flammable substances like hydrogen” during prosecution, the patentee has not disclaimed the nonflammable compound H2O, just because it is two-thirds hydrogen.

Of experts-->

Thus, in response to the question, “If 2008-1029, -1030, -1031, -1032, -1059 11rigid means an object’s capacity to maintain substantially zero changes in density and volume, under a packing pressure of at least about 5,000 psi, and as a consequence, substantially to resist plastic deformation under such pressure, do the Waters’ particles qualify as rigid?,” Cohesive’s expert answered, “Yes, they do.” J.A. 1462. This is sufficient evidence to permit a reasonable jury to conclude that the 30 μm columns were rigid. The district court therefore properly denied Waters’s motion for judgment as a matter of law of noninfringement.

Of district court error-->

The district court expressly stated that it did not understand, as a matter of “strategic judgment,” why a defendant “would want [a] charge on anticipation when they get one on obviousness.” J.A. 5719, 5717. The district court concluded that it could not “find here that the requirements of anticipation have been met” in the submitted prior art references, and it therefore directed a verdict of no anticipation. J.A. 2654. The district court erred by granting judgment as a matter of law on the issue of anticipation before the jury was allowed to consider the claim. (...) An “iffy” anticipation case, however, does not foreclose a favorable verdict.

Of anticipation and obviousness-->

Moreover, the district court was wrong to conclude that granting judgment as a matter of law on anticipation would not harm Waters, simply because the jury had the opportunity to consider the same references for purposes of obviousness. Despite the often quoted maxim that anticipation is the “epitome of obviousness,” In re Kalm, 378 F.2d 959, 962 (CCPA 1967), novelty under 35 U.S.C. § 102 and nonobviousness under 35 U.S.C. § 103 are separate conditions of patentability and therefore separate defenses available in an infringement action. See 35 U.S.C. § 282 (2000); Jones v. Hardy, 727 F.2d 1524, 1529 (Fed. Cir. 1984) (“[T]hough anticipation is the epitome of obviousness, [they] are separate and distinct concepts.”); see also Mendenhall v. Cedarapids, Inc., 5 F.3d 1557, 1563 (Fed. Cir. 1993) (holding that verdict of nonobviousness was not inconsistent with verdict of anticipation by prior public use, despite “legal homily” that anticipation is the epitome of obviousness); In re Meyer, 599 F.2d 1026, 1031 (CCPA 1979) (holding that rejection under § 102 was new ground following previous rejection under § 103, despite maxim that “anticipation is the epitome of obviousness”).

While it is commonly understood that prior art references that anticipate a claim will usually render that claim obvious, it is not necessarily true that a verdict of nonobviousness forecloses anticipation. The tests for anticipation and obviousness are different. See, e.g., Duro-Last, Inc. v. Custom Seal, Inc., 321 F.3d 1098, 1107-08 (Fed. Cir. 2003)

“it does not follow that every technically anticipated invention would also have been obvious.” In re Fracalossi, 681 F.2d 792, 796 (CCPA 1982) (Miller, J., concurring).

footnote 2--> The dissent claims categorically that “every anticipated claim is obvious.” Post at 3. But this is not correct. Consider, for example, a claim directed toward a particular alloy of metal. The claimed metal alloy may have all the hallmarks of a nonobvious invention—there was a long felt but resolved need for an alloy with the properties of the claimed alloy, others may have tried and failed to produce such an alloy, and, once disclosed, the claimed alloy may have received high praise and seen commercial success. Nevertheless, there may be a centuries-old alchemy textbook that, while not describing any metal alloys, describes a method that, if practiced precisely, actually produces the claimed alloy. While the prior art alchemy textbook inherently anticipates the claim under § 102, the claim may not be said to be obvious under § 103. This is precisely why our precedent has rejected reliance on the “legal homily” that “anticipation is the epitome of obviousness.” Mendenhall, 5 F.3d at 1563. We have expressly upheld a jury verdict of anticipation under § 102(b), even when the same jury found the patent nonobvious under § 103. Id. Though the dissent argues that a “long line of precedent” supports its argument that every anticipated claim is obvious, not a single one of the cases it cites actually holds that the “epitome” maxim precludes a jury from finding a patent invalid under § 102, simply because it is nonobvious under § 103. See Johns Hopkins Univ. v. Cellpro, Inc., 152 F.3d 1342, 1357 n.21 (Fed. Cir. 1998) (remarking in footnote that trial court did not err in allowing parties to present argument on anticipation during trial on obviousness); Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983) (prefacing quoted discussion of relationship between anticipation and obviousness with “it is never necessary to so hold”); Fracalossi, 6 F.2d at 794 (addressing whether specific anticipation rejection was sufficient evidentiary support for obviousness rejection); In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974) (affirming § 103 rejection when § 102 rejection would also have been appropriate); In re Kalm, 378 F.2d 959, 963 (CCPA 1967) (reversing anticipation rejection). We cannot conclude—as the dissent’s reasoning implies—that the novelty requirement of § 102 is mere surplussage, subsumed by the nonobviousness requirement of § 103.

Biden stepped into further controversy along racial lines when he responded to a question about his viability in conservative Southern states by claiming, inaccurately, that his home state, Delaware, "was a slave state" in the early days of the republic.

Depends a little bit on what one means by "slave state" and by "early days."

There was slavery in many "Northern" states in the early days of the republic. One can read for example "The Crisis" by Winston Churchill (no, not the once PM). Of New Jersey, note: An exception was New Jersey, where the slave population actually increased during the [Revolutionary] war. Slavery lingered there until the Civil War, with the state reporting 236 slaves in 1850 and 18 as late as 1860.

UPDATE. See also "Parallel Communities: The Underground Railroad in South Jersey," by Dennis Rizzo.

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